Tuesday, 30 September 2014

This appeal lies from the decision of the Examination Board to award the appellant the grade "fail" in the pre-examination for the European
qualifying examination 2014. The Examination Board remitted the appeal to the Disciplinary Board without rectifying its
decision. In its statement setting out the grounds of appeal, the appellant stated that
"if interlocutory revision is not successful, I request to withdraw my appeal
and to have a full refund of the appeal fee." Following the remittance to the Board, the appellant nevertheless inquired whether it was
possible to continue her appeal. The Board found the appeal to be pending, set aside the decision under appeal and granted a "pass" grade.

Reasons for the Decision

Pending appeal

1. The appeal lies from decisions of the Examination Board which adversely
affect the appellant. A notice of appeal including the statement setting out the
grounds of appeal was filed in writing with the Secretariat within one month of
the date of notification of the contested decision (pursuant to Article 24(2)
and (4) REE together with Articles 21(2) and 24(1) RDR and Rules 126(2), 131(2)
and (4) and 134 EPC the time limit expired on 8 May 2014). The fee for appeal
was also paid within said time limit. The appeal thus complies with
Article 24(2) und (4) REE.

2. In its statement setting out the grounds of appeal, the appellant stated
that "if interlocutory revision is not successful, I request to withdraw my
appeal and to have a full refund of the appeal fee." With letter of 15 May 2014,
the Examination Board remitted the appeal to the present board without
rectifying its decision. With email dated 5 June 2014 the appellant nevertheless
inquired whether it was possible to continue her appeal and to request
accelerated proceedings. It emerges from this statement, which was received
before a possible disposal of the appeal was ordered by the appeal board, that
the appellant did not wish to be bound by her previous withdrawal. In the appeal
board's judgement, this statement amounts to a retraction of the withdrawal.Such a retraction is considered allowable, according to general principles of
procedural law in administrative procedures, if withdrawal is to the detriment
of the party and if legal certainty is not at stake. In the present case, both
conditions are fulfilled.

3. Moreover, the withdrawal was not effective, since it had been made on the
condition that the appeal was not allowed within two months of notification of
the contested decision. Indeed, according to general principles of procedural
law in administrative procedures, the withdrawal of an appeal has to be explicit
and unconditional, i.e. it should not depend on any decision to be made or
discretion to be exercised by the competent authority. In the present case, the
condition made by the appellant for the withdrawal was not fulfilled when the
withdrawal was declared but depended on a decision of the Examination Board on
whether or not to rectify its decision. Therefore, there was no valid and
effective withdrawal.

4. For this reason, the appeal board found the appeal to be pending.

Request that the contested decision be set aside

5.-9. [...]

Request that the contested decision be corrected

10.-19. [...]

20. In view of the above, it is not necessary to hold the oral proceedings which
were requested on an auxiliary basis.

ORDER
1. The decision under appeal is set aside.

[...]

This decision has European Case Law Identifier: ECLI:EP:BA:2014:D000314.20140901. The whole decision can be found here. Photo (no changes made) by Thiago Ogoshi obtained via Flickr, CC-BY-2.0.

Friday, 26 September 2014

The examining division refused an application for lack of inventive step. The applicant appealed. The representative indicated not to attend the oral proceedings. The Board refused the application for added subject-matter on a formulation already introduced during examination; this ground had not been raised by the Examining Division. The Board considered the question of inventive step, “since inventiveness was the only reason of the appealed decision to refuse the application, and the objection concerning Article 123(2) EPC could have been easily overcome”.

For inventive step, the Board disagreed with the appellants statement that the problem definition was based on hindsight. Moreover, the Board did not see any inventiveness as such in letting a human operator intervene in an automated process.

Summary of Facts and Submissions

I. The appeal is directed against the decision of the examining division, posted on 27 November 2009, to refuse the application 03721348 for lack of inventive step over […]

II. A notice of appeal was received on 22 January 2010. The fee was received the same day. A statement of the grounds of appeal was received on 6 April 2010. Claim sets of a main and four auxiliary requests were filed.

III. In its summons to oral proceedings, the board gave reasons for its preliminary opinion with respect to Articles 123(2), 84 and 56 EPC.

IV. In a letter dated 20 August 2014, the appellant announced that it would not be represented at the oral proceedings.

[…]

VII. Claim 1 of the main request reads as follows:

"1. A method of reorganizing an array layout in a behavioral synthesis tool used to design an integrated circuit, comprising:

[…]

Reasons for the Decision

1. Overview of the invention

1.1 The application relates to a method of using a behavioural synthesis tool to design integrated circuits. The tool reads a (behavioural) source code description (in a programming language like C or Pascal, or in a behavioural hardware description language like VHDL or Verilog; see original description page 5, lines 12-17) of a circuit designed by a user (figure 2 (30)).

Now, the tool calculates and displays a report of area and speed of the current array allocation in the memories of the circuit (figure 2 (36)).

The user can then modify the constraints, whereupon the tool re-allocates the arrays (figure 2 (34)). There are two way of modifying: either directly by editing the constraints in the source code description (figure 16(c); claim 4 of the main request; original claim 6; page 3, lines 2-4; sentence bridging pages 7 and 8) or indirectly by using a graphical user interface (GUI) like in figure 13 (see also page 10, lines 1-5).

After the constraints have been modified, the tool displays an updated report of area and speed and waits for some unspecified kind of user satisfaction input (page 8, lines 23-24; page 10, lines 4-5). After the user has expressed his satisfaction, the tool transforms/updates the intermediate data structure (in the SIF format) to represent the modified constraints (the step of "transforming/updating" in claim 1 of all requests; see also page 8, line 24 to page 9, line 9).

All this is done before the register-transfer level description (RTL code; figure 2 (40)) of the circuit is generated.

1.2 According to original description page 2, lines 10-19, it is the advantage of the invention to avoid the prior art method of re-editing the source code and re-reading it into the tool in case the user is not satisfied with the array allocation. Another passage (page 9, lines 16-30) further specifies that when re-editing the source code description, it is the re-calculation of the array addresses for every code segment which accesses an array element (figure 16(b): A[2], A[9]) which "requires substantial editing time" and is "error-prone".

2. Overview of the decision

[…]

3. Original disclosure

The examining division did not raise any objections under Article 123(2) EPC in its decision. However, the board finds that the following amendment is not originally disclosed:

3.1 Claim 1 of all requests recites "responsive to the user modifications" at the beginning of the "transforming" step. This amendment was introduced with the first letter of reply to the examining division, dated 7 February 2006. The letter (page 1) indicates passages in the original description supporting this amendment. However, none of these passages show that the transformation of the intermediate data structure is done in response to the user modifications:

[…]

To summarise, the transformation is started only in response to a user satisfaction input, and not already in response to the user modification.

3.2 Thus claim 1 of all requests does not comply with Article 123(2) EPC.

3.3 For this reason alone, the appeal must be dismissed. However, the board will also consider the question of inventive step (and of clarity as a prerequisite of inventive step), since inventiveness was the only reason of the appealed decision to refuse the application, and the above objection concerning Article 123(2) EPC could have been easily overcome.

[..]

5. Inventiveness

In the following, the claims are interpreted in the way indicated in 3.1 and 4.

5.1 Main request

5.1.1 The board considers D1 to be the closest prior art, as it was in the appealed decision (Reasons, 1.1). This was accepted in the grounds of appeal "for the sake of argument" (A.2, first paragraph).

5.1.2 According to the appealed decision (page 4), claim 1 of the refused main request (corresponding to the current main request) differs from D1 in that a graphical user interface (GUI) is used for modifying the constraints, and a report of the estimated circuit area/speed is displayed. The objective technical problem is how to modify D1 in order to allow a user to manually influence the design space exploration process. To solve this problem, a skilled person would provide input means for manually overriding the parameters manipulated by the succeeding optimisation process, e.g. array width, length and grouping (page 5, paragraph 3). He would also provide displaying the results of the manipulation, because interactive design and manual correction is a standard procedure in computer-aided design. GUIs are an obvious implementation choice.

5.1.3 According to the grounds of appeal (page 3, first paragraph), the technical problem formulated in the decision points to the solution, since the problem of allowing a user to manually influence the design space exploration is achieved in the claim by "allowing a user to modify ...". The technical problem without an "ex post facto analysis" as used by the examining division is "the need to provide a method for re-organising an array layout to achieve more efficient memory designs more quickly using customisable design options" (paragraph 4). The automated approach of D1 leads the skilled person in a completely different direction than the application: It teaches that optimisation must involve a thorough evaluation of each design possibility relative to the system cost (last paragraph). Based on D1, a fully automated design optimisation is preferable and desirable (grounds, page 4, paragraph 4).

5.1.4 The board agrees with the view of the examining division. It cannot see that the problem formulated in the decision would point to the solution: The feature of the claim which allows the user to manually influence the design is the provision of a GUI and not the "allowing a user to modify ... constraints". The latter cannot be considered as a technical feature in the proper sense. It is more an aim that is achieved by the GUI and by storing the entered values.

5.1.5 The technical problem formulated in the grounds is less appropriate than that of the decision: "Achieving more efficient memory designs" (page 3, paragraph 4; emphasis added) is stated to be a technical effect of the claimed method and contained in the problem formulation.

5.1.6 However, a more efficient design is not a result of the computer-implemented method itself, but (if achieved) of the design decisions taken by a human designer which are merely entered via a GUI and then cognitively evaluated by the designer with the help of a report. Moreover compared to D1, it is unlikely that the claimed method finally achieves a more efficient memory design, since D1 apparently evaluates exhaustively all the possibilities in an automatic way. So, one can only say that the method aids the designer to manually find a good memory design (therefore the expression "computer-aided design"), but such a good memory design cannot be seen as a technical effect of the method itself.

[…]

5.1.8 The board is of the opinion that the method of D1 is characterised by maximally automating the memory allocation design process, whereas the application aims to provide the designer with a half-automated tool for the same purpose, leaving to the designer the determination of important parameters for allocating arrays in memories.

However, as little as merely automating human behaviour is usually considered to be inventive (see for example section 6. from decision T634/01 of a different board, or section 5.4 from T1937/09 of this board in a different composition), the inverse - i.e. "de-automating" or undoing (in a computer-implemented method) the automation performed by a prior art software - cannot in general be considered to be inventive.5.1.9 In particular in the present application, the board cannot see an inventive activity in leaving the optimisation task mainly to the designer and providing him with the necessary aid to perform that task (reporting the evaluation parameters for the current design and providing him with a GUI for modifying the design).

5.1.10 Therefore, claim 1 of this request is not inventive in the sense of Article 56 EPC.

[…]

OrderFor these reasons it is decided that:1) The appeal is dismissed.2) The request for reimbursement of the appeal fee is rejected.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T083510.20140903. The whole decision can be found here. The file wrapper can be found here. Photo by Richard Giles, obtained via Flickr.

Based on a cited document the Examining division had concluded that it is unlikely that the combination of drugs had a synergistic effect. As the application did not detail how the combination provided an improvement, the application was refused under Art. 83 EPC and Rule 42(1)(e) EPC (Enablement).

The board did not agree with this application of enablement. The board's decision discusses the requirements for enablement for each of the claim categories. The following catchword was provided:

For the purposes of Article 83 EPC, the level of disclosure in the
application which is required for claims directed to pharmaceutical
compositions or kits is not the same as that which is required for
medical-use claims. For claims directed to pharmaceutical compositions
or kits it is in principle sufficient that the application provides
information which allows the skilled person to produce the composition
or kit, and that there are no substantiated doubts that it could indeed
be used in therapy. For second-medical-use claims on the other hand it
is required not only that the composition itself is disclosed in an
enabling way but also that its suitability for the claimed treatment is
plausibly disclosed in the application (Reasons 6).
In the case of a claim directed to a pharmaceutical
composition comprising two classes of compounds which have both already
been used in therapy in the prior art, there is a priori no reason to
doubt that such a pharmaceutical composition can be produced; no
specific functional effect has to be demonstrated (Reasons 6.1.1 and
6.1.2).
In the case of second-medical-use claims, if the claimed
therapeutic effect was already known to the skilled person at the
priority date, it is not necessary to demonstrate it in the application
(Reasons 6.2.2).

2. The examining division objected to the description as not meeting the requirements of Article 83 and Rule 42(1)(e) EPC.

3.
Rule 42(1)(e) EPC states that "the description shall describe in detail
at least one way of carrying out the invention claimed, using examples
where appropriate and referring to the drawings, if any".
Article
83 EPC states that the patent application shall disclose the invention
in a manner sufficiently clear and complete for it to be carried out by a
person skilled in the art. In other words, the teaching of the
application as a whole must enable the skilled person to carry out,
without undue burden, the invention which is defined in the claims.

4.
In its decision, the examining division referred to the subject-matter
not of the claims but of the description. For the purposes of Article 83
EPC as well as of Rule 42(1)(e) EPC, it is the invention, as defined by
the claims, which has to be disclosed in the application in an enabling
and detailed way. Examination of whether the description, as part of
the application, provides such enablement and detail has thus to be done
vis-à-vis the claimed subject-matter.

5. The present main request
comprises product claims directed to pharmaceutical compositions
(claims 1 to 19), as well as claims directed to medical uses, in the
format of either purpose-restricted product claims (claims 20 and 21,
and dependent claims) or Swiss-type medical-use claims (claims 22 and
23, and dependent claims), and product claims directed to kits (claims
36 to 39).

6. Clearly the level of disclosure which is required
for these different categories of claims is not the same. For example,
for claims directed to pharmaceutical compositions or kits - which are
product claims, not restricted to any specific therapeutic effect - it
is in principle sufficient that the application provides information
which allows the skilled person to produce the composition or kit, and
that there are no substantiated doubts that it could indeed be used in
therapy. For second medical-use claims on the other hand it is required
not only that the composition itself is disclosed in an enabling way but
also that its suitability for the claimed treatment is plausibly
disclosed in the application.

6.1 Independent claim 1: Pharmaceutical compositions

6.1.1
Claim 1 is directed to a pharmaceutical composition comprising a DNA
methylation inhibitor and an anti-neoplastic agent, wherein the
anti-neoplastic agent is further defined by a functional feature, namely
that its activity is adversely affected by aberrant DNA methylation. As
an example of DNA methylation inhibitors, cytidine analogs are
mentioned and specifically decitabine (e.g. application page 7, lines 9
to 12), a compound whose use in therapy had already been disclosed in
the prior art (e.g. Schwartsmann G. et al., Investigational New Drugs
18: 83-91, 2000, cited in the European search report). The application
also provides a long list of available anti-neoplastic agents (page 1,
line 15 to page 6, line 21), and further indicates which anti-neoplastic
agents are part of the embodiments of the invention (page 7, line 13 to
page 9, line 8); examples of combinations comprising specific groups of
anti-neoplastic agents are also disclosed on page 17, line 26 to page
29, line 28. There is no reason to doubt that such products could be
formulated as pharmaceutical compositions, since they were indeed
individually available in the prior art as such and had also been used
in combination (Schwartsmann et al., supra). The board thus considers
that the application as filed, and in particular the description,
contains sufficient information to enable the skilled person to produce
the pharmaceutical compositions as claimed.

6.1.2 The arguments of
the examining division were based on an alleged lack of evidence in the
application showing that the technical problem as stated in the
application - synergistic improvement of the effectiveness of
anti-neoplastic agents - had indeed been solved, especially in view of
all possible anti-neoplastic agents encompassed in the claims. Since
enablement of claims conferring absolute protection for products does
not require that any specific functional effect be demonstrated, but
rather that the product can be produced, this argument fails. The board
agrees that claim 1 has very broad limits, but these are well defined
and the skilled person would know without undue burden which compounds
were encompassed and which were not: all that is required is to test
whether or not the anti-neoplastic activity of the anti-neoplastic agent
is indeed impaired by aberrant DNA methylation (a phenomenon which is
explained in the application e.g. at pages 12 and 13). The examining
division has not provided any arguments, let alone substantiated by
facts, that such testing would not be possible without undue burden.

6.2 Independent claims 20 to 23: Medical uses

6.2.1
Claims 20 to 23 are directed to medical uses of combinations of a DNA
methylation inhibitor and an anti-neoplastic agent, wherein the medical
use is for treating a disease associated with abnormal cell
proliferation. By definition, attaining the claimed therapeutic effect
is a functional technical feature of claims directed to medical uses. As
a consequence, under Article 83 EPC, unless this is already known to
the skilled person at the priority date, the application must disclose
the suitability of the product to be manufactured for the claimed
therapeutic application (T 609/02, reasons 9).

6.2.2 As stated
above, the therapeutic application as claimed is treatment of a disease
associated with abnormal cell proliferation. Undisputedly,
anti-neoplastic agents are, by definition, used to treat cancer, which
is an example of a disorder associated with abnormal cell proliferation,
and aim, either directly or indirectly and via different mechanisms, at
controlling such abnormal cell proliferation: this was state of the art
for the present application. Hence, even in the absence of any data in
the application showing a therapeutic effect of these agents either on
cancer or on other diseases associated with abnormal cell proliferation,
there is no apparent reason to doubt that anti-neoplastic agents would
have a role in controlling abnormal cell proliferation both in cancer
and in other diseases not related to cancer. As such, it can be
considered that said claimed therapeutic effect was already known to the
skilled person at the priority date and that it therefore does not have
to be demonstrated in the application. The fact that the compound to be
used consists of a combination with a further substance, namely a DNA
methylation inhibitor, does not change this conclusion, unless there
were reasons, based on verifiable facts, to believe that this substance
would interfere in a negative way with the activity of the
anti-neoplastic agent. On the contrary, the teaching of the application
is that this further compound may enhance the activity of the
anti-neoplastic agent, and this is further supported by the
post-published evidence submitted by the appellant with the grounds of
appeal (documents D3.1, D3.2, D3.3, D5.10).

6.2.3 The arguments
of the examining division concerning an improvement or synergistic
effect (supra) are also not valid for these claims, as these claims do
not require such an effect. Such an argument could be of relevance in
the discussion of inventive step, but not of sufficiency of disclosure.

6.2.4
As regards D4.1, cited by the examining division as an example that one
of the combinations falling within the limits of the claim (decitabine
plus IFN-gamma) did not have an effect, the board follows the
appellant's arguments that, in fact, this document further supports the
concept underlying the invention. D4.1 discloses (page 5222, last
paragraph and page 5223, first paragraph) that cell lines which are
non-responsive to decitabine do not show a high up-regulation of gene
expression in the same genes which are up-regulated in cells that are
responsive to decitabine. According to D4.1, the cutaneous melanoma cell
lines that are non-responsive to decitabine do not present a high
enough up-regulation of gene expression in comparison to the uveal
melanoma cell lines. Re-expression of silenced genes is an outcome of
the hypomethylating activity of decitabine, and D4.1 regards this
difference in re-expression as the reason behind the sensitisation of
uveal melanoma cell lines, but not of cutaneous melanoma cell lines, to
IFN-gamma by decitabine. Finally, D4.1 does demonstrate that decitabine
and IFN-gamma (and also IFN-alpha) had an effect on uveal melanoma
cells.

6.3 Independent claim 36: Kits

6.3.1 Although claim
36 is directed to a "kit for treating a disease...", thus raising doubts
whether it is directed to a product with no purpose restrictions, or
whether it has the scope of a purpose-restricted product claim (see also
below), the same considerations as discussed above apply also to this
claim. Hence, for the reasons given above, this claim is also considered
to fulfil the requirements of Article 83 EPC.

Remittal to the first instance

7.
The examining division's decision was based only on Article 83 EPC (in
conjunction with Rule 42(1)(e) EPC). Novelty and inventive step thus
still have to examined and the board notes that a number of documents
have been cited in the search report as X. Moreover, there is no
indication on file that other EPC requirements such as Article 123(2)
EPC or Article 84 EPC have yet been assessed. In particular, it has to
be examined whether all new combinations of features and new
dependencies of claims do have a basis in the application as filed. Also
some issues of lack of clarity are readily apparent, for example as
mentioned above concerning the wording of claim 36, which raises doubts
as to the claim category; a similar lack of clarity is also present in
claim 19.

8. Although there is no absolute right to have an issue
decided upon by two instances, it is also not the function of the board
to consider and decide upon issues which have not been examined at all
by the department of first instance. The board thus decides to exercise
its discretion under Article 111(1) EPC and remit the case to the first
instance for further prosecution.

Order
For these reasons it is decided that:
1. The decision is set aside.
2. The case is remitted to the first instance for further prosecution.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T161609.20140827. The whole decision can be found here. The file wrapper can be found here. Photo by Lali Masriera obtained via Flickr.

Friday, 19 September 2014

Should a non-technical feature being the sole difference over the prior art be dealt with under novelty or inventive step?

The Board in the present case takes both approaches, namely arguing a lack of novelty due to the difference feature being a subjective feature and therefore not having a limiting effect on the claim. With this lack of novelty reasoning, the Board appears to follow T 553/02 which states in reason 1.3 that "(...) nontechnical features providing no technical contribution to the claimed product (...) do not limit in any way the scope of such a claim".

The Board subsidiarily argues that even if the difference feature were to limit the claim, the claim would lack inventive step based on the difference feature failing to provide a technical solution to a problem. Here, the Board appears to directly follow the approach set out in GL G-VII 5.4.

Summary of Facts and Submissions

I. This is an appeal against the decision of the Examining Division to refuse the European patent application No. 98957085.8. The application concerns the masking of network delay in a networked, user-interactive software application.

II. The Examining Division refused the application according to the state of the file essentially because the idea of masking the delay using a cinematographic technique was not new in view of Capps M. and Stotts D.: "Research Issues in Developing Networked Virtual Realities: Working Group Report on Distributed System Aspects of Sharing a Virtual Reality", Sixth IEEE Workshop on Enabling Technologies: Infrastructure for Collaborative Enterprises, Cambridge, MA, USA, 18-20 June 1997, pages 205-211 (D6).

(...)

IV. In the communication accompanying the summons to oral proceedings, the Board expressed doubts whether, even with the new amendments, claim 1 was novel over D6. Furthermore, the Board considered that, even if the feature of distracting a user with a cinematographic effect were considered to be a difference, this appeared to be a matter of human perception and therefore subjective and not technical. In a reply, the appellant informed the Board that it would not be attending the oral proceedings.

(...)

VI. Claim 1 reads as follows:

"A software agent (114, 116, 118) for local use at a user in a user-interactive software application (112) for running in a distributed system (100) with multiple data processing machines (102, 104, 106) connected via a data network (110), the software agent (114, 116, 118) comprising

an input (203) for receiving information about a delay in the network (110), and

an effector (224) for locally at the user masking the delay by selectively creating an effect dependent on the delay,

the effector being arranged for creating the effect and diverting the user from parts of the application (112) affected by the delay using a cinematographic technique to manipulate an image displayed to the user, sounds supplied to the user or tactile feedback to the user."

Reasons for the Decision

1. The invention

1.1 The invention concerns a networked, user-interactive software application, such as a virtual environment or a multiplayer video game (page 1, lines 2 to 4 of the published application). Such software applications are generally sensitive to delay caused by network latency. In a networked video game, where multiple users are interacting in real time, the network delay may spoil the interactivity of the game (page 1, lines 8 to 12).

1.2 The software agent of the invention seeks to mask the delay by creating a distracting effect that diverts the user from the parts of the application affected by the delay (page 2, lines 3 to 6, 13 and 14). The effect is created using a "cinematographic technique" to manipulate an image displayed to the user, sounds supplied to the user, or tactile feedback to the user (page 2, lines 10 to 14). The cinematographic technique may be, for example: zooming in or zooming out; a dummy object blocking the view; an "interlude"; or switching to another scene (page 2, lines 17 to 24).

1.3 Figure 3 shows an example of a networked video game according to the invention, involving two avatars engaged in hand-to-hand combat. Each avatar is controlled by respective users at networked machines (Figure 1: 102 and 104). When either machine detects an unacceptable network delay, it switches to a close-up (zoomed in) representation of the avatars showing their facial expressions but not the blows that are affected by the delay (page 6, lines 21 to 31). This results in the claimed effect of "diverting the user from parts of the application affected by the delay".

(...)

3. Novelty - claim 1

3.1 The appellant argued that in the invention the delay and the adverse effects were accepted as they were and the cinematographic technique was used to divert the user from these adverse effects. In contrast, the aim of the temporal warping in D6 was to compensate for the delay such that the end of the ball's trajectory was reached without delay. Thus, the temporal warping in D6 was not "diverting the user from parts of the application affected by the delay".

3.2 However, in the Board's view, whether or not a cinematographic technique has the effect of diverting the user from parts of the application affected by the delay is a matter of human perception. The effect will depend on the user's visual system and state of mind, and is, therefore, also subjective. For example, the warping of the ball in D6 might serve to distract some users from other parts of the application, such as the throwing and catching at each end of the event. Other users might not be so distracted and might still notice the delay in all parts of the application. In the Board's view, such a difference cannot have a limiting effect on the claim.

3.3 Accordingly, claim 1 is not novel (Article 54(1) and (2) EPC).

4. Inventive step - claim 1

4.1 Even if the feature of diverting the user from parts of the application affected by the delay had been considered to distinguish the invention, the Board judges that it would not have involved an inventive step.

4.2 It is established jurisprudence of the boards of appeal that an allowable invention must be a technical solution to a technical problem. The appellant stated that the technical problem was how to deal with network delay. The technical solution was to divert the user with the effect. However, since as discussed above, this solution is a matter of human perception, it follows that it would be non-technical. Furthermore, it also follows that it would be unpredictable whether such a subjective feature would actually solve the technical problem. In this respect, the invention is somewhat analogous to showing a video clip to somebody waiting for a lift to arrive, which is also using a cinematographic technique to deal with a delay. Thus, there would be no technical solution to the problem.

Order

For these reasons it is decided that:

The appeal is dismissed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T125908.20140506. The whole decision can be found here. The file wrapper can be found here. Photo from European patent application No. 98957085.8

Tuesday, 16 September 2014

This appeal decision relates, among other things, to essential features. The appellant filed the appeal against a decision of the Examining Division. The claims were refused, among other things, under Art. 84 EPC because the claims should be inconsistent with the embodiments according to the Figures 6 to 9. Many grounds for refusals can be found in Art. 84 EPC, such as "clarity" and "not supported by the description". Art. 84 EPC also relates to essential features via the text
"define the matter for which protection is sought" (and Rule 43(3) EPC).
The magical words of "the claims do not define for which protection is
sought" is only mentioned by the Examining Division in the context of
the second auxiliary request and was raised by the Examining Division
because they considered a feature of the claims of the request as a wish.Unfortunately the appellant did not join the oral proceedings and, therefore, the Board of Appeal refers in its "reasons of the decision" to the communication that had been sent to the appellant together with the summons for oral proceedings. The citations below comprise most of the text of this communication.In this decision, the Board of Appeal uses Art. 84 EPC in many ways. Also an objection of missing essential features has been raised. Contrary to the Examining Division, the Board of Appeal immediately starts with an essential elements discussion in the context of admissibility of the amendments made. After the admissibility discussion the Boards of Appeal discusses all requests and brings quite a lot of other objections on the table without explicitly discussing "essential elements" once again.Citations from the decision:

Summary of Facts and Submissions

IV. Independent claim 1 of the main request reads as follows (amendments as
compared to claim 1 as originally filed are in bold with deletions in
strikethrough; emphasis added by the Board):"1. A handheld apparatus for directional disengagement of a dose unit (17),
such as a pill, from a packaging (16), said apparatus comprising:a housing (2) having a first and a second end, where the housing (2) is
provided with an opening (2c) for receiving and supporting a packaging
and positioning of a dose unit (17) in thisa packaging (16)
relative to the housing (2) in said opening (2c) and holding means (6) for
supporting said packaging and holding means (16) arranged adjacent to in said opening (2c) of at the second end; andexpelling means comprising a plunger (5) which by actuation of drive means
(1) can be pushed into the opening (2c) and against thesaid dose
unit (17) positioned on the said holding means (6) and hereby having a dose unit
(17) disengaged; andwherein said drive means (1) is activated by an activation unit (10) placed
on the exterior of said housing (2)."

[...]

VIII. With a communication dated 12 June 2014 annexed to summons for oral
proceedings set for 9 September 2014 the Board presented its preliminary and
non-binding opinion with respect to the claims of the main request and the first
to third auxiliary auxiliary requests as filed with the statement of the grounds
of appeal.

The Board stated amongst others that it would be necessary to discuss the
admissibility of the amendments made in all four requests as follows:"3. Admissibility of amendments made (Articles 84 and 123(2) EPC)3.1 First of all, it is clear from the entire description of the application
as originally filed (corresponding to the published WO-A-2007/033673 which in
the following is quoted) that the problem underlying the invention (likewise the
solution thereto) is actually the disengagement of a dose unit (e.g. pill,
tablet, capsule) from a blister pack but not from any type of package. Therefore
it is evident that the presently claimed apparatus generally is not suitable for
the disengagement of a dose unit (a pill) from e.g. a plastic box or a pill
bottle (containing e.g. 100 pills). Furthermore, it also appears to be evident
that the claimed holding means is a blister pack holder (="blister holder" or
"blister pack support device") and must have at least one exit hole through
which the dose unit (pill) can be disengaged from the blister pack by the action
of the plunger which, when activated, will be pressed against said blister pack
in said blister pack holder.Consequently, any independent claim 1 should contain these essential features
to comply with Article 84 EPC.Main request

3.2 Claim 1 as originally filed defines a handheld apparatus for directional
disengagement of a dose unit from a packaging (i.e. a blister pack) comprising a
housing having a first and a second end, this second end having an opening for
receiving, supporting and positioning of a dose unit in a packaging (i.e. a
blister pack). The apparatus further comprises a holding means (i.e. a blister
pack holder or blister pack support device) arranged adjacent to said opening
and expelling means comprising a plunger which can be pushed against the blister
pack support device by actuation of drive means to disengage a dose unit.Claims 2 and 3 as originally filed further define that the plunger is pushed
into the opening and that the drive means be activated by an activation button,
preferably placed in the first end of the housing.3.3 Claim 1 of the main request now defines a housing having a first and a
second end which housing has an opening for receiving and positioning of a dose
unit in a packaging relative to the housing at the second end. In this context
the question arises, how can this opening of the apparatus position said dose
unit (with)in the blister pack relative to the housing, since no basis for this
wording could be found in the WO-A-2007/033673. It further comprises holding
means in said opening for supporting said packaging in said opening which is at
the second end. It further comprises expelling means comprising a plunger which,
by actuation of drive means, can be pushed into the opening and against said
dose unit positioned on the said holding means (which has been stated to be
positioned relative to the housing in said opening ??) and said drive means is
actuated by an activation unit placed on the exterior of said housing.3.3.1 However, the apparatus embodiments according to the quoted figures 1-3
as well as the quoted passage on page 9, lines 1 to 3 (which actually refers to
the activation button (10) of the embodiment of figure 1), are stated to have
"An actuation unit 10, a hand support 12 and a blister holder unit 6 is provided
on the outer surface of the housing" (page 6, lines 30 and 31 referring to the
embodiment of figure 1). According to these figures 1-3 said actuation unit or
actuation button (10) is "placed in the first end of the housing", i.e. in the
proximity of the hand support unit 12 for ergonomic reasons, not anywhere else
on the outer surface of the housing.

3.3.2 The apparatus embodiments of figures 1-3 have an opening in the second
end of the housing (i.e. the lower part of the housing) in which exclusively the
plunger but neither the holding means nor the blister pack including the dose
units is arranged. Thus the question arises how said plunger can be pushed into
said opening since it is already arranged therein.Furthermore, all apparatuses of these figures 1-3 comprise an energy supply
and a control means for electrically actuating the drive means.Thus it appears that the subject-matter of claim 1 of the main request as
currently amended represents an intermediate generalisation of claim 1 as
originally filed in combination with features (or generalised features)
extracted in isolation from the embodiments of the original figures 1-3. In
addition said figures do not depict any opening (2c), let alone one in the
second end of the housing wherein the holding means is arranged or wherein the
blister pack can be supported or positioned - without any basis in the
application as originally filed, contrary to Article 123(2) EPC.

3.3.3 An opening (2c) in the second end of the housing is not shown in the
original figures 1-3. On the other hand, a gap (1c) between an upper portion 1a
and a lower portion 1b of the housing 1 of the apparatus according to figures 8
and 9 - which represents an embodiment that does not contain any opening in the
second end 1b of the housing 1 - is actually only depicted in figure 9 of the
WO-A-2007/033673. Furthermore, according to this embodiment of figures 8 and 9
the blister holder is not in the gap - if a gap were to represent an opening -
between the upper portion 1a and the lower portion 1b but is integrally provided
by said lower portion 1b (see page 11, line 29 to page 12, line 2). Hence none
of the depicted embodiments according to figures 1-3 and 6-9 shows a housing
with an opening in the second end in which the blister holder or the blister
pack is arranged.

3.3.7 Hence the main request appears to contravene Articles 84 and 123(2)
EPC. The main request therefore appears not to be allowable.

First auxiliary request3.4 Compared to the main request claim 1 of the first auxiliary request is
redrafted in the two-part form. Contrary to the appellant's arguments however
the subject-matter of claim 1 of the first auxiliary request is not identical
with that of the main request although it contains almost the identical
features, so that the above objections concerning claim 1 of the main request
apply mutatis mutandis, since:i) firstly, it defines that "the drive means (1) is activated by an
activation unit (10) placed in a first end of the housing" (which is also
objectionable under Article 84 EPC since this wording "in a first end of the
housing" allows the assumption that it refers to a first end of the housing
different from the one defined in line 3 of this claim 1), andii) secondly, it defines that "the drive means (1) is activated by an
activation unit (10) placed in a first end of the housing (2) on the exterior of
said housing (2), so that the apparatus is handheld during use".

3.4.1 It is not clear to the Board what the difference should be between a
"handheld apparatus", i.e. an apparatus which during its use - i.e. after
activating the drive means by said activating unit with one hand - will or at
least can also be held in the hands of the user, and an apparatus wherein "the
drive means (1) is activated by activation unit (10) placed ... so that the
apparatus is handheld during use", i.e. an apparatus that is (only) suitable to
be handheld during its use if the activation unit (10) is placed at a certain
position (?).If there exists a difference between these definitions no explicit basis
appears to exist in WO-A-2007/033673 for this wording "the apparatus is handheld
during use" nor does this wording appear to be directly and unambiguously
derivable therefrom - then this new definition contravenes Article 123(2)
EPC.If there exists no difference, then the question arises why this amendment,
which additionally appears to define a "result to be achieved" (Article 84 EPC),
has been made.3.4.2 In any case, the objections concerning intermediate generalisations
without a basis in WO-A-2007/033673 and concerning clarity raised with respect
to claims 1, 8, 9, 17 and 18 of the main request appear to apply to the
respective claims of this request mutatis mutandis.

3.4.3 Hence the first auxiliary request appears not to be allowable.

Second auxiliary request

3.5 Claim 1 of the second auxiliary request is based on claim 1 of the first
auxiliary request with the additional feature "and in that the first end is an
upper portion (2a) of the housing (2) and a lower portion (2b) of the housing is
formed so that the housing (2) integrally provides the holding means (6) with an
exit hole (7) and defining a gap (2c) therebetween for receiving and supporting
packaging".Consequently, the above objections concerning claim 1 of the first auxiliary
request apply mutatis mutandis.3.5.1 Furthermore, the added feature represents a generalisation without
basis in WO-A-2007/033673 of the very specific embodiment of figures 8 and 9
(see also page 11, line 29 to page 12, line 2) where the first end of the
housing corresponds to the upper portion 1a of the housing 2 and the second end
corresponds to the lower portion 1b of the housing which includes a main portion
(which is between the upper and lower portion defining a gap 1c between them)
with a hand support 12 and which lower portion is formed so that it (i.e. the
lower portion 1b) integrally provides a blister (pack) support holder 6 with an
exit hole 7 and wherein the plunger 5 is arranged in the upper portion 1a and is
extendable out of the distal end thereof.Thus it is not the housing, which additionally includes a main portion
between the upper and lower portion, but only the lower portion 1b which
integrally provides a blister support holder 6 with an exit hole 7.Furthermore, the definition omits that the second end of the housing is the
lower portion. The present definition allows that the housing at the first end
has an upper portion and relative thereto, also at the first end, a lower
portion of the housing. Such an embodiment has no basis in the application as
originally filed. Furthermore, the definition "and defining a gap (2c)
therebetween" of this feature appears to render claim 1 additionally unclear
since it is not clear whether it refers to said holding means with an exit hole
or to said upper and lower portions.3.5.5 Consequently, the second auxiliary request does not appear to comply
with Articles 84 and 123(2) EPC and thus appears not to be allowable.Third auxiliary request3.6 Claim 1 of the third auxiliary request is also based on claim 1 of the
first auxiliary request. Consequently, the above objections in point 3.4
concerning claim 1 of the first auxiliary request apply mutatis mutandis.

3.6.1 It contains the additional feature "and in that the holding means (6)
are pivotally arranged for movement between an active position and a passive
position for storage of the apparatus".Hence the subject-matter of claim 1 of this third auxiliary request goes into
a completely different direction than that of claim 1 of the second auxiliary
request and therefore represents a diverging request.

3.6.2 Furthermore, this feature is based on claim 8 as originally filed,
which appears not to have any counterpart in the description of WO-A-2007/033673
and which referred to a more general handheld apparatus having an opening at the
second end of the housing and holding means adjacent to this opening of the
second end but did not refer to the specific embodiment according to the figures
8 and 9. In this context it is remarked that this specific embodiment of the
figures 8 and 9 does not appear to allow any pivotable movement of the blister
holder 6 since it is integrally formed with the lower portion 1b of the housing.
Accordingly, there appears to exist no need for such a movement of this blister
holder for the storage of this specific apparatus. Hence it appears to be
apparent that another intermediate generalisation without any basis in the
application as originally filed is created by this definition, contrary to
Article 123(2) EPC.

3.6.6 Consequently, also the third auxiliary request appears not to comply
with Articles 84 and 123(2) EPC and thus appears not to be allowable."

IX. With letter dated 22 July 2014 the appellant stated "Please be informed
that the Applicant will not attend the oral proceedings."This letter did not contain any further arguments concerning the objections
raised in the above mentioned Board's communication.Reasons for the Decision1. The statement of the appellant in its letter dated 22 July 2014 - that it
will not attend the oral proceedings (see point IX above) - is interpreted by
the Board, as is constant jurisprudence (see Case Law of the Boards of Appeal,
7**(th) edition 2010, III.C.2.3.1), that the appellant withdraws its auxiliary
request for oral proceedings and relies on its submissions of the written
proceedings.2. In the communication accompanying the summons for oral proceedings the
Board, taking account of the submissions of the appellant, has raised objections
under Articles 84 and 123(2) EPC against the main request and the first to third
auxiliary requests, explaining why in the Board's opinion the subject-matter of
claim 1 of the main request does not contain all essential features (Article 84
EPC) and represents an intermediate generalisation without basis in the
application as originally filed (Article 123(2) EPC). Further, it is explained
why the objections raised with respect to claim 1 of the main request apply
mutatis mutandis to the claims 1 of the first to third auxiliary requests (see
point VIII above).3. The appellant did not reply in substance to these objections (see point IX
above). Since there has been no attempt by the appellant to refute or overcome
the objections raised in the above communication, the Board sees no reason to
depart from its preliminary opinion expressed therein.4. Taking account of the preceding observations, the Board concludes - for
the reasons already set out in the communication dated 23 September 2013 (see
point VIII above) - that the subject-matter of the claims 1 of the main request
and of the first to third auxiliary requests contravene Articles 84 and 123(2)
EPC.5. Consequently, the main request and the first to third auxiliary requests
are not allowable.[...]This decision has European Case Law Identifier: ECLI:EP:BA:2014:T061213.20140909. The whole decision can be found here. The file wrapper can be found here. The presented figure is Figures 8 of the WO patent application publication that relates to the above discussed decision.

Friday, 12 September 2014

This is an appeal against the decision of the examining division to refuse a European patent
application, a second-generation divisional application. The examining division had held that the second-medical use claim in the purpose-limited format of Art.54(5) EPC related to the same subject-matter as the Swiss-type claims as granted with the grandparent application. The Board followed the argumentation of earlier T 1780/12 (taken by another board), and held the examining division to be wrong. Followers of our blog may find the differences with the conclusion in T 1570/09 interesting, where the Board denied the simultaneous presence of both claims in a single application (see e.g., T 1570/09, r.4.1 and r.4.8).

Summary of Facts and Submission
III. The applicant (appellant) submitted its statement of grounds of appeal
and, in a further submission, referred to the identity of the legal issues in
the present case and in decision T 1780/12 of 30 January 2014, taken by another
board.

Dependent claims 2 to 8 refer to specific embodiments of the subject matter
of claim 1, specifying the same additional features as claims 2 to 8 of the
request before the board.

Reasons for the Decision
Double patenting
2. The sole ground for refusal of the present patent application was the
prohibition of double patenting.

3. Under the EPC 1973 a patent for a further medical application could,
pursuant to a line of case law first set out in decision G 5/83 (OJ EPO 1985,
64), be granted for a claim directed to the use of a substance or composition
for the manufacture of a medicament for a specified therapeutic application (so
called "Swiss-type claim") (cf. "Case Law of the Boards of Appeal of the EPO",
7th edition 2013, I.C.6.2.1, 144).
During the course of the revision of the EPC 2000, former Article 54(5) EPC
1973 ("first use in a medical method") was renumbered to become Article 54(4)
EPC and a new Article 54(5) EPC was introduced to provide protection for second
medical uses. The new Article 54(5) EPC eliminates any legal uncertainty on the
patentability of further medical uses. It unambiguously permits
purpose-restricted product protection for each further new medical use of a
substance or composition already known as a medicine (cf. "Case Law of the
Boards of Appeal of the EPO", ibid.).

4. Claim 1 of the present application is in the form of a purpose restricted
product claim ("An Apo-2 ligand for use in a method for treating cancer"; cf.
item IV above) according to Article 54(5) EPC 2000.
Claim 1 of the grandparent application was granted in the "Swiss-type" format
("Use of an Apo-2 ligand for the preparation of a medicament for the treatment
of cancer"; cf. item V above) under the provisions of Article 54(5) EPC
1973.

5. The examining division stated in its decision that a claim directed to a
second or further medical use claim under Article 54(5) EPC 2000 was considered
to be directed to the same subject-matter as a "Swiss-type" claim directed to
the same medical use, in the sense that both these claims concerned the same
invention claimed in a different format.

6. The principle of the prohibition of double patenting is based on the idea
that the applicant has no legitimate interest in proceedings that give rise to
the grant of a second patent in respect of the same subject-matter for which he
already holds a patent (cf. Reasons 13.4 of decision G 1/05, OJ EPO 2008,
271).

7. The decisive issue is therefore whether the subject matter of claim 1 of
the present application is the same as the subject matter of claim 1 of the
grandparent application.

8. The present case has much in common with the case underlying decision T
1780/12 of 30 January 2014.The crucial issue for the main request underlying said decision was also
whether the subject matter of a claim directed to a new medical use of a known
compound was the same, irrespective of whether the claim was in the "Swiss-type"
format or in the format according to Article 54(5) EPC 2000.Furthermore, the board notes that points 1 and 3 to 8, and, with the
exception of a single sentence, all of point 2, of the decision of the examining
division underlying the present appeal (see item VI above) can be literally
found in points 2 to 10 of the decision of the examining division underlying
appeal case T 1780/12 (cf. item VII of decision T 1780/12).
9. Like in the present case, a parent application had been granted with
claims in the "Swiss-type" format for the use of a composition comprising a
biologically effective amount of an anti-aminophospholipid antibody, or
antigen-binding region thereof, in the manufacture of a medicament for the
treatment of cancer. A divisional application (underlying T 1780/12) had been
filed with a main request comprising purpose-restricted product claims referring
to a composition comprising a biologically effective amount of an
anti-aminophospholipid antibody, or antigen-binding region thereof, for the
treatment of cancer. Further claims, referring to features specifying a
mechanism of action, were identical in both types of claims.
The examining division had refused the main request of the divisional
application under Article 97(2) EPC in conjunction with Article 125 EPC because,
in its view, claim 1 before it related to the same subject matter as granted
claims 1, 24 and 25 of the parent application.

10. Regarding the issue of what constitutes the subject matter of a claim,
the board in T 1780/12 concluded, by reference to decision G 2/88 (OJ EPO 1990,
93), that the category or type of claim and its technical features constitute
its subject matter (cf. T 1780/12, Reasons 11 to 13). It was therefore necessary
to establish whether or not the subject matter of the claims as defined by their
categories in combination with their technical features was the same.11. The board stated that Swiss-type claims of the form "Use of X for the
manufacture of a medicament for the treatment of Y" are construed as
purpose-limited process claims while claims formatted in accordance with Article
54(5) EPC as "X for use in the treatment of Y" are construed as purpose-limited
product claims. The categories of the claims are therefore different (cf. T
1780/12, Reasons 16).Regarding the technical features, the board concluded that both sets of
claims defined the same compound and the same therapeutic use, but that the
Swiss-type claims comprised in addition the feature of manufacturing a
medicament while the claims of the request before it did not (cf. T 1780/12,
Reasons 17).The board therefore decided that the subject matter of the claims of the main
request before it was different from the subject matter of the Swiss-type claims
of the parent application.
12. The board also dealt with the examining division's argument that "double
patenting is concerned with the substantial identity of claimed subject matter
and is not related to the (only potential) variance in granted protection".

13. In this respect, the board in case T 1780/12, agreed with the finding in
decision T 1391/07 of 7 November 2008, that an applicant's lack of legitimate
interest in patenting the same subject matter twice, invoked by the Enlarged
Board in decision G 1/05 (cf. point 6, supra) could not be invoked in the case
in which the scopes of protection only partially overlapped as there was no
objective reason to deny the legitimate interest of an applicant in obtaining a
protection different from that of the parent patent already granted (cf. T
1780/12, Reasons 19). Any potential variance in the scope of protection afforded
by the claims was therefore crucial to the decision to be taken.Based on point 3.3 of the Reasons of decision G 2/88, the board concluded
that the category of a claim and its technical features constitute its subject
matter and determine the protection conferred (cf. T 1780/12, Reasons 21). Thus,
contrary to the examining division's view, the claimed subject matter and the
scope of protection conferred by the claims are intrinsically linked.Since the purpose limited process claim (Swiss-type claim) and the
purpose-restricted product claim according to Article 54(5) EPC 2000 belonged to
different categories and differed in at least one technical feature, they
differed in the scope of protection afforded (cf. T 1780/12, Reasons 20 to
22).There was no manifest objective reason to deny the legitimate interest of the
appellant in pursuing claims drafted in accordance with Article 54(5) EPC 2000
and thereby obtaining protection different from - albeit partially overlapping -
with that of "Swiss-type" claims of the parent application already granted (cf.
T 1780/12, Reasons 25).14. This board agrees with the legal assessment in decision T 1780/12 in that
the scope of the claims in both cases is different, and considers its
conclusions to be directly applicable to the present case.
15. In the present case, the claims of the patent application and the
grandparent application define the same compound (an Apo-2 ligand defined by
features (a) to (e)), and the same therapeutic use (the treatment of the same
cancers, as specified in the claims (cf. items IV and V, above). But the subject
matter of claim 1 is defined in the format of a purpose-restricted product
claim, whereas the subject matter of claim 1 of the grandparent patent is
defined in the Swiss-type format.Since the categories of the claims are different and there is at least one
difference in the technical features defining the claimed subject matter (the
manufacture of a medicament), the subject matter defined by the claims and the
scope of protection conferred by the claims are different.16. The board therefore decides that granting a patent on the basis of claims
1 to 8 would not lead to double patenting.
17. Since the board does not uphold the decision under appeal, there is no
need for oral proceedings (cf. item VIII, above).

18. As the decision under appeal is exclusively concerned with the issue of
double patenting (cf. item II above) the Board decides to remit the case to the
department of first instance for further prosecution (Article 111(1) EPC).

Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the examining division for further prosecution on
the basis of

claims 1 to 8, filed under cover of a letter dated 22 October 2009.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T087912.20140827. The whole decision can be found here. The file wrapper can be found here. Photo "Swiss flags" by Janet McKnight obtained via Flickr.